CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2124/21 – Don’t mess up the board – No toggling between requests

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The patent relates to a dual-driver vibratory flowmeter.

Brief outline of the case

The application was refused for lack of IS, and the applicant appealed.

With the statement of grounds of appeal, the applicant submitted a MR and AR1, that superseded the sole request subject of the appealed decision.

Faced with a communication under Art 15(1) RPBA in which the board announced that the MR and AR1 were likely not to be admitted, the applicant reverted to the sole request underlying the decision.

The board did not admit this request pursuant to Art 13(2) RPBA.

The applicant’s point of view

The submission of the sole request with the reply to the board’s communication was nothing else than a return to the sole request subject of the appealed decision.

Taking this request into account, and assessing it on its merits, would be in line with the purpose of appeal proceedings to review the appealed decision.

Moreover, the features distinguishing the sole request from the MR and AR1 implied no substantial technical change. In particular, going from the MR and AR1back to the sole request did not give rise to any new issues regarding technical matters.

The board should thus be in a position to readily assess the sole request as to inventive step. Lastly, the board’s preliminary objection under Art 123(2) against the MR and AR1 was unexpected.

The board’s decision

It is true, that the primary object of the appeal proceedings is to review the appealed decision. But it is equally true that a party’s appeal case shall be directed to the requests on which said decision was based. Moreover, a party’s statement of grounds of appeal shall contain their complete appeal case, cf. Art 12(2+3) RPBA.

On appeal, the sole request subject of the appealed decision was abandoned, and amended requests were filed instead.

When later the sole request was submitted in reply to the board’s communication, it constituted an “amendment” to the appeal case within the meaning of Art 13(2) RPBA.

The applicant’s choice, on appeal, not to seek a review of the appealed decision prevented the board from pursuing the primary object of the appeal proceedings under Art 12(1,a and b) and (2) RPBA.

Instead, the late submission of the sole request left its consideration to the board’s discretion under Art 13(2) RPBA.


It should not come as a surprise that, with the RPBA valid since 2020, it is important to file AR in first instance. Waiting to go to appeal in order to file requests has rarely led to a positive outcome.

Toggling between requests is something not to the liking of the boards.

The decision of the board does thus not come as a surprise.

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